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Calibrating Trademark Holder’s Reputation Outside its Jurisdiction

That any aggrieved trademark holder can institute a claim against any respondent however distant their countries of residence means only that the former has jurisdiction to maintain the proceeding. To advance its cause the complainant has to demonstrate that at the time the domain name was registered its reputation extended to the respondent’s country of residence with at least circumstantial proof that the respondent was aware of its trademark. However well-known a complainant’s trademark may presently be is not evidence of its strength in the past. Even if the disputed domain name is identical to the complainant’s trademark there is no presumption in favor of the complainant, although more explanation is expected from the respondent as the trademark rises on the classification scale from generic and descriptive to the arbitrary and fanciful.

Two cases illustrate this point. The trademark in Transportes AEROMAR S.A. SE C.V. v. Aeromar, Inc., D2010-0098 (WIPO March 19, 2010) is AEROMAR, not a word commonly found in a dictionary of the English language but nevertheless chosen by the U.S. Respondent for its domain name, <aeromar.com> and appropriate if used in a sense that captures the meaning of “aero.” The Complainant “offers passenger, charters, mail and parcel flight, primarily within Mexico.” The Respondent’s website is a portal for things relating to aircraft, but the Respondent is not a carrier. The second case, involves a word not defined in the Merriam-Webster Dictionary on my desk but with an understandable meaning in English, “intermesh”, Indiamart Intermesh Limited v. Portmedia Inc. / Intermesh.com, D2009-1804 (WIPO March 15, 2010). “Intermesh” is defined in Merriam-Webster On Line as “to mesh together; interlock.” The website is populated with dating links.

In Aeromar, the parties are respectively located in Mexico and California, not a great distance but the Complainant offered no evidence that at the time the domain name was registered its reputation had traveled to the United States. Its argument was also undercut by two facts. First, that its trademark registration in the United States post-dated the registration of the domain name; second, that it waited 14 years to commence a proceeding to capture the domain name. The Respondent did not argue laches, but the time lapse is nevertheless a significant factor in weighing evidence for and against legitimacy. “The fact that the Respondent’s domain name and associated website have existed for more than 14 years, apparently without complaint, also weighs in favor of the legitimacy of the Respondent’s conduct.”

In Portmedia, also, the domain name had been registered for a substantial period of time, since 2001, and although the Complainant showed that it had a significant international presence today, it offered no proof that it had such a presence when the domain name was registered. A complainant’s naked assertion that its trademark is famous or well-known has weight only to the extent that it coincides with the registration of the domain name. “The rapid growth of Complainant’s advertising supports the inference that nine years ago … the level of international advertising and scope of secondary association globally was fairly limited.”

Respondents violating third party rights generally give themselves away by the content of their websites. However, suspicion that many years earlier respondents chose names corresponding to complainants’ trademarks is not evidence of bad faith registration; merely a non actionable coincidence.

Gerald M. Levine <udrpcommentaries.com>

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